Solium Capital ULC v. tong lu
Claim Number: FA2209002012652
Complainant is Solium Capital ULC (“Complainant”), represented by Eric J. Shimanoff of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is tong lu (“Respondent”), Macau.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <soliums.com>, (‘the Domain Name’) registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on September 19, 2022; Forum received payment on September 19, 2022.
On September 20, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <soliums.com> Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 20, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@soliums.com. Also on September 20, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark SOLIUM, registered, inter alia, in the USA for software services related to capitalization with first use recorded as 2000 for stock brokerage services.
The Domain Name registered in 2022 is confusingly similar to the Complainant’s mark adding only the letter ‘s’ and the gTLD “.com” which does not prevent the said confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name has been used for a site purporting to offer competing financial services using the Complainant’s trade mark SOLIUM spelt correctly in its masthead so as to appear to be a site emanating from the Complainant which is not a bona fide offering of goods or services or a legitimate non commercial fair use. This is registration and use in bad faith diverting and confusing Internet users in full knowledge of the Complainant and its rights.
Moreover, upon information and belief, the financial services offered via Respondent’s website are fake. The User Agreement of Respondent’s website states that the agreement is entered into by the user and “CeresStar.” Respondent’s website’s “Legal Notice” states that “CeresStar Digital Asset Trading Service Platform (CERESSTAR), [is] a company incorporated under the Dutch Companies Act 2018, company number C76567.” However, an online search for “CeresStar” and company number “C76567” or “76567” on the Netherlands’ Chamber of Commerce online public register yields no results; in fact, the Chamber of Commerce site states that valid company numbers are 8 digits long. In contrast, the purported company number on Respondent’s website consists of one letter and five numbers. The offering of fake services is not a legitimate or bona fide use of a domain name and is registration and use in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark SOLIUM, registered, inter alia, in the USA for software services related to capitalization with first use recorded as 2000 for stock brokerage services.
The Domain Name registered in 2022 has been used for a site using false company registration details purporting to offer competing financial services which uses the Complainant’s SOLIUM mark spelled correctly in its masthead.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Name consist of the Complainant's mark (which is registered, inter alia, in the USA for software services related to capitalization with first use recorded as 2000 for stock brokerage services) adding only a letter ‘s’ and the gTLD “.com”.
The Panel agrees that a misspelling of a Complainant’s mark in a domain name do not prevent confusing similarity between that domain name and the Complainant's trade mark pursuant to the Policy. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a misspelling of the word ‘bank.’). As such adding a letter ‘s’ does not prevent the Domain Name being confusingly similar to the Complainant’s trade mark under the Policy.
The gTLD “.com” does not serve to distinguish a domain name from a complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use of the Domain Name is commercial and so cannot be legitimate non commercial fair use.
The web site to which the Domain Name redirects is a competing financial services site which uses the Complainant’s mark spelled correctly as a masthead so as to appear to be a site related to the Complainant. The Panel finds this use is deceptive. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to offer services which competed with the Complainant's business did not constitute a bona fide use of goods and services); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Further false company registration details are provided on the site strongly suggesting the services offered are fake. Previous Panels have noted that offering fake services does not constitute a bona fide offer or a legitimate noncommercial or fair use under Policy 4(c)(i) and (iii). See Acton Educational Services d/b/a West Coast Univ. v. West Coast Univ. Int’l Inc., FA1191541 (Forum July 2, 2008) (website offering fake educational services was not a legitimate use of domain name). The offering of fake services suggests the site is involved in fraudulent activity which cannot be legitimate use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (finding that ‘Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use’).
The Domain Name also appears to be a typosquatting registration differing by only one letter ‘s’ from the Complainant’s mark in the second level part of the Domain Name. Typosquatting is also an indication of a lack of rights or a legitimate interest. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
The Respondent has not responded to this Complaint to refute the evidence of a prima facie case presented by the Complainant.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Domain Name seeks to take advantage of the situation where Internet users may make a typographical error. Typosquatting itself is evidence of relevant bad faith registration and use and disruption of the Complainant’s business. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith). Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters …Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”).
Further, in the opinion of the Panel the use made of the Domain Name in relation to the Respondent’s site is deceptive and disruptive in that visitors to the site might reasonably believe it is operated by or connected to the Complainant as it offers competing services under the Complainant’s mark spelled correctly in its masthead giving the impression that the site attached to the Domain Name is commercially connected with the Complainant when it is not. Further the evidence shows that the web site is likely to be offering fake services. Purporting to be a legitimate financial company when the services offered appear to be fake makes it more likely than not that the Respondent is aware of the Complainant, its rights and services and is actively attempting to take advantage of the Complainant’s goodwill to deceive and confuse for likely fraudulent purposes.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site and the services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Fraudulent activity is bad faith per se. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <soliums.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 13, 2022
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